California IP attorney Scott Alan Burroughs published a recent article in the Above the Law website titled, IP And PIs: How The Right Investigator Can Make or Break Your Intellectual Property Case—PIs can help litigators bridge the gap between vague suspicion and a fact pattern robust enough to support a complaint.
Here is one of his quotes, “Not every infringement case requires a team of investigators, but they can be critical in helping litigators bridge the gap between vague suspicion and a fact pattern robust enough to support a complaint. In fact, the International Trademark Association has stated explicitly that instead of contacting law enforcement, which can be time-consuming and often to little effect, “companies are often better off placing their first call to an IP-PI.”
The statement Burroughs is referring to comes from the January 2018 INTA Bulletin titled, “Private Investigators: A How-To Guide on Finding the Perfect Fit and Best Practices in Building a Case (Part I).
Here’s another quote from the bulletin:
“The fight against counterfeiters is a collective effort that takes collaboration from all parties. A significant fact in the fight is the use of private investigators (PIs) to build a case and sell it to law enforcement. INTA’s Anticounterfeiting Committee has therefore created this guide as a resource for brand owners to consider when choosing a PI.
- IP-PIs have specialized training and experience in IP matters
- Ability to gather evidence
- Trained to testify competently at trial
- Ability to render expert testimony on identifying counterfeit products
- IP-PI competence is critical
- Seasoned IP PIs have earned a reputation among law enforcement officers that garners respect and cooperation when the time is right to involve the police.
RECENT NOTABLE EXAMPLE
My August 15th post titled, Recent 70 Million Dollar Fake Nike Air Jordans—Private Investigators Played Key Role,” illustrates the sometimes critical importance of using IP-PIs.
In that case, it was IP-PIs that initially developed the information that was passed onto law enforcement and which led to their (law enforcement’s) vigorous follow-up.
Here is a quote from my post, “Again this case is an excellent illustration of law enforcement and a major brand working together, but it also represents the value of retaining private investigators to develop more information on a counterfeiting operation prior to its presentation to law enforcement. It was this information that identified the potential magnitude of the operation and, as a result, drew the commitment of the authorities.”
HOWEVER…IP-PIs ARE NOT GATEKEEPERS TO LAW ENFORCEMENT
Having acknowledged the benefits of using IP-PIs, it is important for brands to not disregard the benefits of reaching out to law-enforcement directly. If a brand comes to learn that the counterfeiting activity is occurring in a major city such as New York or Los Angeles, for example, there should be no hesitation on the brand’s part to speak with the NYPD and LAPD trademark infringement units directly.
And certainly, in the U.S., brands should not hesitate to communicate with representatives of the National Intellectual Property Rights (IPR) Center. In fact, the FBI publically announced that special agents designated to investigate IP crime are located in field offices throughout the country, and brands are encouraged to develop a relationship with an FBI agent in their local field office.
The most effective long-term anti-infringement strategy is for brands and law enforcement to continue to develop case-collaborations. As former FBI supervisory special agent Michael LeMieux (once assigned to the National IPR Center) explains, the benefits of brands to engage with federal law enforcement are significant.
Here are some of his points:
- Industry Benefit – “IP-focused law enforcement is engaged in the full spectrum of e-commerce intermediaries, as well as brands across a wide range of industries…sophisticated investigative techniques, many of which are increasingly being used by industry.”
- Law Enforcement Benefit – “…industry provides…expertise and education…and even on the efficacy of third-party providers of brand protection services can all help larger-scale federal law enforcement efforts.”
- Joint Benefit – “…early in a case, the industry can learn what federal prosecutors need for action, and federal law enforcement can ensure evidence-gathering proceeds in a way that is most useful for prosecutors.”
- “Initiate more frequent interactions with federal law enforcement specializing in IP.”
- “Expand your interactions…into such areas as technical and proactive crime fighting topics.”
- “Interact with as many members of a law enforcement team as feasible.”
- “Ask questions…lots of them.”
(See my February 10th post titled, “Does the IP Industry Reach Out to Federal Law Enforcement Enough?” for more details.)
And as Bruce Foucart, the former Director of the National IPR Center commented on my post titled, “Does the IP Industry Reach Out To Federal Law Enforcement Enough? “FOLLOW-UP,” “Great article…the IPR Center also has specific helpful documentation for brand holders as to what referral information they need and will best help them (law enforcement) put a criminal case or enforcement action together going forward. Local field personnel will have similar information if you ask them.”
So, IP-PIs are not gatekeepers to law enforcement but can absolutely assist in establishing and maintaining that relationship on behalf of the brand.
It is encouraging to see that INTA’s Anti-Counterfeiting Committee continues to embrace the benefits of brands using IP-PIs to support their fight against counterfeiting. But, the benefits of using IP-PIs are not limited to trademark infringement. IP-PIs can provide litigation support in all categories of IP, i.e., copyright, patents, and trade secrets. (See my January 18th post titled, “Investigating Intellectual Property (IP) Theft,” in which I provide examples.)